China: Obtaining Patents For Software-Related Inventions In China

As more and more innovators in China have developed new business
models by making use of computer science and internet technology,
patent protection of software-related inventions has become one of
the hottest topics in the intellectual property field in this
country. For example, the concept of "Internet Plus" has
been very popular in the recent two years, which means utilizing
internet technology to improve the business models of traditional
services, and whether to and how to protect such new business
models with patents has caused many discussions in China. On this
background, the Guidelines for Patent Examination and related
patent examination practice have been updated to meet the
increasing demands for protecting software-related inventions, and
now there is an unprecedented friendly environment for patent
applications involving software and especially business
methods.

In this article, we will introduce the latest updates of the
patent examination practice for software-related inventions, and
will discuss some useful tips in drafting and prosecuting
software-related inventions in China.

1. Relaxed requirements for formal subject matters and for ways
of drafting claims for software-related inventions - get prepared
for future enforcement by drafting varieties of claims

According to the Guidelines for Patent Examination, "a
computer program per se" falls within the category of
"rules and methods for mental activities" which are
excluded form patent protection as provided in Article 25 of the
Patent Law (see Part II, Chapter 1, Section 4.2 of the Guidelines
for Patent Examination).

For a long time until April 1, 2017, claims having subject
matters of computer programs or computer-readable mediums
characterized merely by computer programs stored thereon had been
rejected as seeking to protect "rules and methods for mental
activities". At that time, a claim seeking to protect a
software-related invention could be allowed only if it was drafted
as a method comprising steps or an apparatus comprising modules for
performing steps in strict correspondence with the method claim or
a process flow recited in the description.

However, method claims would encounter many difficulties in
enforcing the patent right, and "apparatus comprising
modules" claims would also lead to restricted enforcement
because some court judges thought it was unclear what kind of
hardware components the "modules" actually referred to.
In addition, if computer programs were distributed in the form of
computer-readable mediums, it would be possible that the
manufacturer of the computer-readable mediums would not infringe
either of the above method and apparatus claims. Due to these
concerns, there had been a strong demand in the software industry
to relax the exclusion of the formal subject matters and the formal
requirements for drafting software-related inventions so that it
could be easier for innovators to enforce their patent rights.

As of April 1, 2017, the revised Guidelines for Patent
Examination came into force, in which a very subtle revision was
made as follows (see Part II, Chapter 9, Section 2 of the revised
Guidelines for Patent Examination):

"If a claim merely relates to an algorithm, or mathematical
computing rules, or computer programs per se, or computer programs
per se recorded in mediums (such as tapes, discs, optical discs,
magnetic optical discs, ROM, PROM, VCD, DVD, or other
computer-readable mediums), or rules or methods for games, etc., it
falls into the scope of the rules and methods for mental activities
and does not constitute the subject matter for which patent
protection may be sought."

Although the addition of the word "per se" looks like
a small revision, the State Intellectual Property Office of China
(SIPO) explained that it was intended to distinguish a sequence of
machine-readable code which should be protected by copyright from
the technical solution based wholly or partially on process flow of
computer programs. In this way, the revised Guidelines for Patent
Examination have clarified that what cannot be protected is a
computer-readable medium with the program code "per se",
but a computer-readable medium having instructions for performing a
technical method is not anymore excluded from patent protection. In
other words, since April 1, 2017, a computer readable medium
characterized in the instructions recorded thereon is no more
rejected simply because of its title of the subject matter.

It is also worth noting that although the revised Guidelines for
Patent Examination also use the word "per se" after the
term "computer programs" even when no computer medium is
mentioned, what has become allowed in the current patent
examination practice is only the computer readable medium, but a
computer program alone without a tangible carrier is still excluded
from patent protection according to the current patent examination
practice.

In addition, the revised Guidelines for Patent Examination also
include the following (see Part II, Chapter 9, Section 5.2 of the
revised Guidelines for Patent Examination): "If it is drafted
as an apparatus claim, the various component parts and the
connections among them shall be specified, wherein the component
parts may comprise not only hardware but also programs."

SIPO explained that this revision intended to clarify that the
way of drafting an apparatus involving software features would not
be limited to "apparatus comprising modules" as described
above, but the claims may be drafted as an apparatus comprising a
memory having computer programs stored thereon and a processor
configured to perform several steps when executing the computer
programs. This way of drafting will enable the claim to recite
actual components such as memories and processors and other
hardware which are contained in an apparatus, instead of
"modules" with vague meanings.

According to the revised Guidelines for Patent Examination, now
there may be the following ways of drafting a claim to seek
protection of a software-related invention:

a method comprising steps of ...;

an apparatus comprising modules for ...;

an apparatus comprising a memory having computer programs
stored thereon and a processor configured to perform, when
executing the computer programs, steps of ...

a computer readable storage medium having computer programs
stored thereon, the computer programs being configured to perform,
when executed on a processor, steps of ... .

Since the revised Guidelines for Patent Examination came into
force just recently, there has not yet been many court cases to
tell which of the above four kinds of claims would be more useful
in enforcement, and thus it may be better to keep all these types
of claims, especially for inventions of high value.

In addition, in order to avoid the possibility that the court
judges would have difficulty in understanding and interpreting how
the software actually works, it is advisable to add some general
description of hardware and software environment in which the
invention could be implemented.

It is provided in Article 2 of the Patent Law that
"invention" means a new "technical solution".
According to the Guidelines for Patent Examination, a technical
solution is a set of technical means which adopt laws of nature for
solving a technical problem (see Part II, Chapter 1, Section 2 of
the Guidelines for Patent Examination). According to the patent
examination practice, if a claim does not involve technical means,
does not address a technical problem, and does not achieve a
technical effect (note that the key point is the word
"technical"), the claim would be deemed as seeking to
protect a patent-ineligible subject matter. On the other hand,
Article 25 of the Patent Law provides that no patent right shall be
granted for "rules and methods for mental activities" as
we mentioned above, and the examples of "rules and methods for
mental activities" given in the Guidelines for Patent
Examination include "methods and systems for management in
respect of organization, manufacture, business implementation and
economy etc." (see Part II, Chapter 1, Section 4.2 of the
Guidelines for Patent Examination). In a nutshell, Both Article 2
and Article 25 of the Patent Law can function as the legal ground
to reject an invention involving business methods.

Many Chinese patent attorneys still have the memory of receiving
rejections of patent applications from SIPO only because the claims
involve business purpose such as advertising or marketing. At that
time, in spite of technical features contained in the claims, the
examiners from SIPO sometimes would still assert, without support
of any prior art evidence, that the claims were patent ineligible
because these technical features were "common knowledge in the
art". In addition, even if some technical features did
function to solve a certain technical problem occurring in the
business method, the examiners sometimes would still assert that
the problem to be solved by the invention was the business problem
instead of the technical problem. Since two years ago, we have
observed a pleasant change in the examination practice. For a claim
which comprises both technical features and non-technical features,
the examiners have no longer asserted such claims as patent
ineligible, but would first do prior art search, and then consider,
during inventiveness assessment, whether the problem to be solved
by the invention on the basis of the distinguishing features is
"technical". If the problem to be solved by the invention
on the basis of the distinguishing features is not
"technical" but merely business related, the claim would
be rejected as lacking inventiveness. In this way, the rejection
must be made on the basis of prior art evidence, and the whole
solution would be considered, but no ineligibility rejection could
be made simply on the basis of an intuitive identification of a
business purpose or a careless assertion of "common
knowledge". Since this change of examination practice, we have
noticed that many ineligibility rejections have been revoked and
more inventions involving business methods have been allowed.

This change of examination practice is also embodied more or
less in the revised Guidelines for Patent Examination that came
into force since April 1, 2017, with the addition of the following
paragraph (see Part II, Chapter 1, Section 4.2 of the revised
Guidelines for Patent Examination):

"If a claim related to a business model involves not only
content of business rules and methods but also a technical feature,
it shall not be excluded from the possibility of being granted a
patent right according to Article 25 of the patent law."

According to the current examination practice, if a claim has a
technical feature, even if it also contains some nontechnical
features, the technical solution as a whole should be deemed as
patent eligible. In other words, a patent application involving
business methods will more possibly encounter an inventiveness
rejection than a patent ineligibility rejection.

To give just one example, Chinese Patent Application No.
201310105464.4 filed by Tencent relates to a method for
collaborative order. Although this patent application aims to
protect a trading process including sending an collaborative order
invitation to selected relational users of a subscriber, and
combining order information sent by the subscriber and sub-order
information returned by the relational users so that a trading
platform can process combined order information, no patent
ineligibility rejection was raised in the first Office Action
issued for this patent application, but instead inventiveness
rejection was raised based on prior art reference documents. This
patent application was allowed in June 2016, and the claims of the
allowed claims are as follows.

"1. A method for collaborative order, comprising:
receiving a collaborative order request sent by a subscriber,
wherein the collaborative order request carries commodity
information; acquiring a relational user of the subscriber from a
relational user set of the subscriber in response to the
collaborative order request;

sending a collaborative order invitation of the commodity
information to the relational user of the subscriber, to invite the
relational user of the subscriber to send sub-order information of
the commodity information in response to the collaborative order
invitation; receiving order information of the commodity
information sent by the subscriber and the sub-order information of
the commodity information sent by the relational user of the
subscriber, and combining the order information of the commodity
information sent by the subscriber and the suborder information of
the commodity information returned by the relational user, to
obtain combined order information; sending the combined order
information to a trading platform of the commodity information for
processing;

updating a state of the combined order information and
sending the combined order information with the state to the
subscriber and the relational user of the subscriber who returns
the sub-order information of the commodity
information."

From the above example, you may have an idea of how friendly the
current examination is for inventions involving business
methods.

Although the examination for inventions involving business
methods have been relaxed, it should be noted that pure business
method without any technical element is still patent ineligible.
Therefore, in order to obtain allowance of your patent applications
involving business methods, it is still advisable to include a
detailed description of technical features, technical problem and
technical effects in the specification.

Until now, we have seen that the updated patent practice and the
latest revised Guidelines for Patent Examination have provided a
better environment for software-related inventions than ever, and
innovators who create new business models based on computer
technology can have more opportunities to protect their business
solutions. In addition, as some large Internet companies have
emerged and grown even larger in China in the recent years, the
domestic innovators in China are even asking more protections from
patents, and thus people are expecting to see whether the SIPO
might even ferment another revolution in the future to further
relax the patent examinations of software-related inventions. For
example, everyone is eager to know whether even computer programs
may become allowable subject matter in the future, so that
enforcement against software provided and distributed via the
Internet may become even easier. Let us wait and see whether this
will finally come true.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

The Delhi High Court, in a recent trademark matter before it, awarded exemplary compensation to the U.K. based plaintiff, Whatman International Limited in lieu of damage caused to its various intellectual property rights by the defendants since a period stretching over 25 years.

Can an artwork that is under copyright be relied upon for obtaining trademark registration?

Some comments from our readers…“The articles are extremely timely and highly applicable”“I often find critical information not available elsewhere”“As in-house counsel, Mondaq’s service is of great value”

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.

To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access

No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq

No, please do not send me promotional communications from Mondaq

Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions